• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Feb 3, 2021 · IPR2020-00202 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of review on all challenged claims and grounds in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “I. ANALYSIS When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion 1 Patent Owner also requested rehearing by the Precedential Opinion Panel (“POP”) to “clarify the date from which Fintiv Factor 4 should be analyzed, namely, the Petition’s filing date.” Req. Reh’g 1; Ex. 3001. On October 27, 2020, POP denied Patent Owner’s request for review. Paper 19. may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes were misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Factor 4 must be constrained to the facts as they existed when the Petition was filed. For example, in the Board’s informative decision in Sand Revolution II, LLC v. Continental Intermodal Grp.—Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative) (“Sand Revolution”), the panel considered and gave weight to Petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Here, we also considered the parties’ more recent efforts in the underlying litigation to narrow the issues at trial, which reduced concerns of duplicative efforts between the District Court and the Board and minimized the potential for conflicting decisions. See, e.g., Dec. 15–16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12.” slip op. at 4

  Discretionary denial
  Patents in suitUS 10,212,586
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Feb 3, 2021 · IPR2020-00200 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in its Fintiv analysis and decision to institute review of claims 1–5 and 8–12.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes were misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Factor 4 must be constrained to the facts as they existed when the Petition was filed. For example, in the Board’s informative decision in Sand Revolution II, LLC v. Continental Intermodal Grp.—Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative) (“Sand Revolution”), the panel considered and gave weight to Petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Here, we also considered the parties’ more recent efforts in the underlying litigation to narrow the issues at trial, which reduced concerns of duplicative efforts between the District Court and the Board and minimized the potential for conflicting decisions. See, e.g., Dec. 16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12.” slip op. at 4

  Discretionary denial
  Patents in suitUS 10,084,991
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Dec 15, 2020 · IPR2020-00199 · APJ John A Hudalla · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution in place because its Fintiv analysis was not an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion 1 Patent Owner also requested rehearing by the Precedential Opinion Panel (“POP”) to “clarify the date from which Fintiv Factor 4 should be analyzed, namely, the Petition’s filing date.” Req. Reh’g 1. POP denied Patent Owner’s request for review. Paper 20. Notwithstanding, we consider Petitioner’s arguments regarding Fintiv Factor 4 below. may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We do not agree with Patent Owner that our analysis of Fintiv Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution II, LLC v. Cont’l Intermodel Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative) (“Sand Revolution”). Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, our consideration of post-filing developments here (i.e., Petitioner’s Final Election of Prior Art in the underlying litigation) is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing election of prior art, which greatly diminished the overlap between the underlying litigation and this case.” slip op. at 4

  Discretionary denial
  Patents in suitUS 6,329,794
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Dec 15, 2020 · IPR2020-00204 · APJ John A Hudalla · IPR · Rehearing

  The Board denied Maxell’s rehearing request, leaving institution in place because it reasonably weighed the Fintiv factors and did not abuse its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, we focused on the effects of Petitioner’s proposal to withdraw Van der Salm here: alleviating concerns of duplicative efforts between the district court and the Board and minimizing the potential for conflicting decisions. Dec. 16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing proposal to withdraw Van der Salm.” slip op. at 4

  Discretionary denial
  Patents in suitUS 6,928,306
• Unified Patents Inc.Rehearing denied
  PTAB · Feb 10, 2020 · IPR2019-01071 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not show the JCT-VC references disclosed the claimed information and decoder.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We are not persuaded by Petitioner’s arguments. Petitioner does not direct us to arguments in the Petition explaining that the purpose of the discussion of “skip_flag” together with “MODE_SKIP” was only to provide explanation how the prediction unit process causes the decoder to receive MODE_SKIP. A request for rehearing is not an opportunity to present new and/or improved arguments and explanations to address the application of the prior art to the claim limitations. As addressed above, the Petition asserts several times that “skip_flag” (i.e., integrated code block flag) is decoded (see Pet. 46, 73, 75) and is used to set the coding mode equal to “MODE_SKIP” (i.e., integrated code block flag information)” (see Pet. 44, 46, 73–74, 75–76), or that the coding mode is set equal to “MODE SKIP in the prediction unit based on the decoded value of “skip_flag” (Pet. 58, 79). And as pointed out in the Decision, “MODE_SKIP” does not appear in the prediction unit syntax disclosed in section 4.1.10, and the description of the semantic of “skip_flag” in section 4.2.10 is silent regarding “MODE_SKIP.” Dec. 23–24 (citing Ex. 1004 §§ 4.1.10, 4.2.10; Ex. 1005 §§ 4.1.10, 4.2.10). Instead, as we noted above, the JCT-VC References disclose that “MODE_SKIP” is set based on “slice_type” and “pred_mode.” See Dec. 24 (citing Ex. 1004 § 4.2.10, Table 4-7; Ex. 1005 § 4.2.10, Table 4-11). In other words, the disclosures of the JCT-VC References do not support Petitioner’s asserted connections between “skip_flag” and “MODE_SKIP.”” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In the Decision, we determined: Based on the arguments presented in the Petition, we understand Petitioner to assert that the disclosures of “skip_flag” together with the disclosures of “MODE_SKIP” found in each of A205 and B205 [(the JCT-VC References)] teach the claimed “integrated code block flag information.” . . . More particularly, we understand Petitioner to assert that “skip_flag” teaches the claimed “integrated code block flag,” “MODE_SKIP” teaches the claimed “integrated code block flag information,” and that decoding “skip_flag” (i.e., integrated code block flag) is used to set or not set “MODE_SKIP” (i.e., integrated code block flag information). Dec. 22 (citing Pet. 44–47, 58–60, 66–68). We further determined that Petitioner did not establish that the JCT-VC References disclose the asserted links between skip_flag and MODE_SKIP.” Id. at 23. More specifically, we determined that “contrary to Petitioner’s assertions that ‘skip_mode’ is decoded and used to set ‘MODE_SKIP,’ [the JCT-VC References] instead disclose that ‘MODE_SKIP’ is set based on ‘slice_type’ and ‘pred_mode.’” Id. at 24 (citing Ex. 1004 § 4.2.10, Table 4-7; Ex. 1005 § 4.2.10, Table 4-11). We concluded that “Petitioner ha[d] not set forth evidence sufficient to demonstrate that the combination of A205 with Chen, and the combination of B205 with Chen, disclose, teach, or suggest ‘integrated code block flag information,’ and ‘an entropy decoder configured to decode integrated code block flag information [element 1.1],’ as recited in claim 1.” Id. at 25.” slip op. at 3

  • BurdenDecided for patent owner

    “the Decision addressed element 1.1 of claim 1, not element 1.6 of claim 1. See Dec. 20–25. To the extent Petitioner’s arguments apply to element 1.1 of claim 1 (the claim limitation addressed in the Decision (see Dec. 20–25)), we are not persuaded that the Decision misapprehends or overlooks arguments presented in the Petition. Petitioner cites one passage (see Pet. 24) of a ten-page section of the Petition providing summary characterizations of the disclosures of the JCT-VC References. See Pet. 18– 28. This portion does not include arguments applying the teachings of the JCT-VC References to the limitations of claim 1. We decline Petitioner’s invitation to assemble arguments from the Petition’s summary characterizations and note that Petitioner could have been, but did not, present such arguments in the Petition. For all of the forgoing reasons, we are not persuaded that, in rendering the Decision, we misapprehended or overlooked arguments presented in the Petition.” slip op. at 12

  None
  Patents in suitUS 9,544,595
• Donner Technology, LLC v. Pro Stage Gear, LLCRehearing denied
  PTAB · Dec 9, 2019 · IPR2018-00707 · APJ John A Hudalla · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving claims 5, 7, 8, 18, 20, and 21 not shown unpatentable on the challenged obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “construction of the phrase ‘above the surface,’ then the Board’s construction cannot be reasonably discerned.” Req. Reh’g 8. If that were the case, Petitioner contends we “must articulate and explain [our] construction for the purposes of judicial review.” Id. at 9. Yet Petitioner failed to explain in the Petition how the cited references teach the “above the surface” limitations of claims 5 and 18 under any construction of these limitations, including the one implied in footnote 8 of the Petition. See Pet. 55 n.8, 69 n.10. Petitioner did not specify any dispute regarding the meaning of the term “the surface” and neither did Patent Owner. See, e.g., id. at 8–9 (no terms proposed by Petitioner for construction), 55 (Petitioner’s analysis for claim 18 referring to earlier analysis relative to the “effect mounting surface”); Paper 26, 34–41, 43 (no arguments in Patent Owner’s Response based on an interpretation of “the surface”); Paper 34, 16–17 (Petitioner in its Reply referring to arguments in the Petition for “above the surface”). As such, we did not expressly construe “above the surface.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In addition, Petitioner purports to construe “above the surface” for the first time. See Req. Reh’g 2, 7 (stating that the plain and ordinary meaning of “above the surface” is “above the ground” or “above the area to provide spacing for cables to run underneath the frame”). Petitioner could have, but did not, put forth such constructions in its Petition. See 37 C.F.R. ordinary meaning of “above the surface” in the Request for Rehearing (see Req. Reh’g 7), Petitioner’s arguments come too late. And Petitioner never previously attempted to associate the recited “surface” with “the ground” or “the area to provide spacing for cables to run underneath the frame.” Contrary to Petitioner’s new constructions, and as explained above, Petitioner previously associated the recited “surface” with “the effect mounting surface.” See Pet. 55 n.8 (“the ’023 Patent provides no support for the frame in Claim 15 being supported above the effect mounting surface in Claim 18” (bold emphasis added)), 69 n.10 (referring to footnote 8).” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “of the “above the surface” limitation was framed by its statement in the Petition that claims 5 and 18 are invalid “under 35 U.S.C. § 112, second paragraph, because the ’023 Patent provides no support for the frame . . . being supported above the effect mounting surface.” Pet. 55 n.8 (italics in original; bolding emphasis added), 69 n.10 (referring to footnote 8); see also Final Dec. 51 n.12 (quoting same). Thus, Petitioner associated the “surface” in the recitation “above the surface” with the “effect mounting surface” recited in base claims 2 and 15. Despite this association, Petitioner’s obviousness analysis made no attempt to show that Arseneault’s higher backwall (i.e., the “frame base,” see Pet. 51–53, 55–56) supports SCC-700’s cross members A–D (i.e., the “frame,” see id. at 50) above the units board of SCC-700 (i.e., the “effects mounting surface,” see Pet. 46–47).1 Rather, Petitioner addressed only the “frame base supporting the frame” and “allowing the cable to pass beneath the frame” limitations of claims 5 and 18. See Pet. 54–55, 69–70. Thus, we determined that Petitioner’s analysis “d[id] not establish that Arseneault teaches ‘a frame base supporting the 1 As we acknowledged, Petitioner’s analysis for claim 18 builds upon its anticipation analysis for claim 15 and its analysis for the recited “frame” in claim 1. See Final Dec. 51–52.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “3 We also considered Petitioner’s argument from its Reply that an ordinarily skilled artisan “could have easily made a rigid connection between the cross members and end-members using the same fasteners that are disclosed in Carter.” Final Dec. 72 (citing Paper 34, 24; Ex. 1051 ¶ 26). We were not persuaded by this rationale because Petitioner did not provide a reason why an ordinarily skilled artisan would have made such a connection. See id. at 75. Petitioner does not contest this determination in its Request for Rehearing.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 6,459,023
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,976,069
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8

  Discretionary denial
  Patents in suitUS 7,394,432
• ZTE (USA) Inc. v. Fractus, S.A.Rehearing denied
  PTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4

  • Other 314aDecided for patent owner

    “The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,397,431
• T-Mobile US, Inc. / T-Mobile USA, Inc. v. Barkan Wireless Access Technologies, L.P.Rehearing denied
  PTAB · Mar 22, 2019 · IPR2017-01099 · APJ Sharon Fenick · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended any matter in the final written decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “We adopted Patent Owner’s proposed construction for “proxy server” (“an intermediate server that accepts requests from the device and acts on behalf of the device”) and determined that no construction of the term “acts as proxy” was necessary in light of that construction. Dec. 16–18. Patent Owner argues, without further explanation, that we “overlooked or misapprehended the fact that Patent Owner explained in its proposed claim construction that a proxy server must actually service requests.” Reh. Req. 3. Nevertheless, we considered this argument as part of our treatment of Patent Owner’s “proxy server” construction argument, wherein we adopted Patent Owner’s claim construction of that term. PO Resp. 8–9; Dec. 16–18. Patent Owner also argues that we “failed to apply the requirement that a proxy server accept a request on behalf of the issuer, and then, if necessary, re-issue the request.” Reh. Req. 3 (citing PO Resp. 8, 51). However, we did not adopt any such “requirement” in our construction of “proxy server.” Nor is this argument found in Patent Owner’s claim construction arguments or its arguments relating to whether a VPN gateway” slip op. at 7

  • Strike new argumentNew argument consideredDecided for petitioner

    “Although 37 C.F.R. § 42.23(b) prohibits new issues presented for the first time in reply, the reply may respond to arguments made on an already contested issue with appropriate new evidence. Intelligent Bio-Systems v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (citing 37 C.F.R. § 42.23(b)). As set forth in the Final Written Decision, we found that Petitioner’s arguments, including those listed in Paper 33 (Patent Owner’s List of Improper Supplemental Reply Arguments), related to arguments made in the Patent Owner Preliminary Response, which were incorporated by reference into Patent Owner’s Supplemental Response. Final Written Decision 61–62. Patent Owner does not present any reasoning or argument that persuades us that in making this determination we misapprehended or overlooked any arguments or evidence.” slip op. at 6

  Claim construction
  Patents in suitUS 9,042,306

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.